Case No. D2009-0456

1. The Parties

The Respondent is Domains by Proxy, Inc. / Vishwa Prasad, United State of America.

2. The Domain Name and Registrar

The disputed domain name <tgvfamily.com> is registered with GoDaddy.com, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 7, 2009. On April 8, 2009, the Center transmitted by email to GoDaddy.com, Inc., a request for registrar verification in connection with the disputed domain name. On April 8, 2009, GoDaddy.com, Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 15, 2009 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on April 16, 2009. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 24, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was May 14, 2009. The Respondent did not submit a timely response. Accordingly, the Center notified the Respondent's default on May 15, 2009.

On May 16, 2009, the Respondent sent a brief reply by email.

The Center appointed Dr. Clive N.A. Trotman as the sole panelist in this matter on May 20, 2009. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The facts are derived from the information provided by the Complainant. TGV is the name of a French national and international train service operated by the Complainant.

The Complainant owns trademarks for TGV dating back to August 17, 1978 for products and services related to railroad transportation as follows:

The Complainant also owns domain names incorporating its trademarks, including <tgv.com>.

No significant facts are available about the Respondent except those filed in the registration documents for the disputed domain name. The disputed domain name appears to have been created on October 26, 2008.

5. Parties' Contentions

A. Complainant

The Complainant submits copies of registration documents as evidence in support if its contention that it is the owner of the trademarks listed in section 4 above.

The Complainant contends that the disputed domain name is confusingly similar to its trademarks, which are well-known in France and internationally. The mere addition of the word “family” to the word “tgv” is insufficient to avoid confusion since the whole of the Complainant's trademark is incorporated in the disputed domain name, which members of the public would associate wrongly with the Complainant.

The Complainant further contends that the Respondent does not have rights or legitimate interests in respect of the disputed domain name. The Respondent has not been licensed, contracted or otherwise permitted by the Complainant to use its trademarks or to register any corresponding domain name. The Respondent, as far as the Complainant knows, has no rights or interests in the disputed domain name.

The Complainant contends, with documentary evidence that the disputed domain name leads to websites of its competitors. This does not constitute a legitimate, bona fide use of the disputed domain name under the Policy. The Respondent's website is commercial in nature and it is clear that the Respondent derives or intends to derive commercial gain.

The Complainant further contends that the disputed domain name was registered and is being used in bad faith. The disputed domain name resolves to a parking website that displays various sponsored links to competing third party websites relating to travel. The website is in French and is used, for example, to offer tickets for sale and other travel-related products and services. The Complainant contends that the Respondent was aware of the existence of the Complainant's trademark TGV. Thus, Internet users may be misled on the source, sponsorship, affiliation, or endorsement of the Respondent's website.

The Complainant cites a number of previous UDRP decisions that it considers to have precedent value.

The Complainant requests the transfer of the disputed domain name.

B. Respondent

The Respondent did not reply formally or within the allotted timeframe to the Complainant's contentions. Two days late, the Respondent sent an email that said in full:

“Hello,

My family name is Tumbalam Gooty (TG) and my first name is Vishwa (V) and I registered TGV FAMILY.com to host my family website.

I do not understand what this dispute is about. Can I get some clarity of what these emails are about?

Thanks,

Vishwa”

Those parts of the quotation above shown underlined, appeared red in the email but were not underlined.

6. Discussion and Findings

Paragraph 4(a) of the Policy states that the Respondent is required:

“…to submit to a mandatory administrative proceeding in the event that a third party (a “complainant”) asserts to the applicable Provider, in compliance with the Rules of Procedure, that:

(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) you have no rights or legitimate interests in respect of the domain name; and

(iii) your domain name has been registered and is being used in bad faith.”

The Complainant has made the relevant assertions as above. The dispute is properly within the scope of the Policy and the Panel has jurisdiction to decide the dispute.

A. Identical or Confusingly Similar

The Complainant is required to prove that it has rights in a trademark, and that the disputed domain name is confusingly similar to the trademark.

The trademark in which the Complainant asserts rights is TGV. Satisfactory documentary evidence has been produced to the effect that the Complainant owns and has rights in a number of French trademarks comprising or embodying the motif TGV. The Panel is aware (but does not introduce as evidence) that the French trademark TGV, in the context, is publicly understood to mean train à grande vitesse (high speed train).

The disputed domain name is <tgvfamily.com>. In the assessment of confusing similarity, the gTLD designation “.com” is considered to be irrelevant since it is an integral part of the dispute domain name. What remains is “tgvfamily”, in which the ordinary or descriptive word “family” is easily recognised, thus directing attention to the non-word “tgv” which is identical to the Complainant's trademark TGV. Furthermore the principle generally applied in UDRP disputes is that the presence in the disputed domain name of a well-known trademark constitutes similarity with the trademark, irrespective of the presence of other words or letters. The Panel is satisfied that the trademark TGV is well-known in its context and that the disputed domain name would be confusingly similar to it in the minds of many members of the public. The Panel finds for the Complainant in the terms of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant has the onus of proving that the Respondent does not have rights or legitimate interest in the disputed domain name. The Complainant asserts that this is so, and that it has not in any way permitted the Respondent to use its trademark. Furthermore, the website to which the disputed domain name resolves is one that offers links to other websites including competitors of the Complainant, and therefore does not constitute a bona fide use under the Policy. The Complainant asserts that the Respondent's website is commercial in nature and it is clear that the Respondent derives or intends to derive commercial gain. Thus the Complainant has asserted a prima facie case to the effect that the Respondent does not have rights or legitimate interests in the disputed domain name.

The Respondent has the opportunity, under paragraph 4(c) of the Policy or otherwise, to refute the Complainant's prima facie case. The only reply from the Respondent, received after the date for the submission of a formal Response, was an informal email. The brief reply, quoted in section 5B above, was to the effect that the Respondent's family name is Tumbalam Gooty and his personal name is Vishwa, thus “TGV”.

The thrust of the Respondent's email amounts to a claim to legitimate rights or interests in the terms of paragraph 4(c)(ii) of the Policy, which may allow such a claim where the Respondent is commonly known by the disputed domain name. It may also amount to a claim of legitimacy in the terms of paragraph 4(c)(iii) of the Policy, under which a Respondent may claim to be making a fair or noncommercial use of the disputed domain name, in this case “to host my family website”.

The Respondent's claim to be known as Tumbalam Gooty, Vishwa, is at variance with the registrant name, which is recorded as Vishwa Prasad. According to the screenshot made by the Complainant on April 7, 2009, the disputed domain name resolves to a website in French, whereas the Respondent has provided a residential address in Washington. The purpose of the website claimed by the Respondent is “to host my family website”, whereas the site in fact portrays numerous links to advertisers of travel and train services, being the same field of commerce as the Complainant's business of train travel.

In accordance with paragraph 10(d) of the Rules, the Panel is required to determine the admissibility, relevance, materiality and weight of the evidence. Taking a view of all of the evidence including the discrepancies listed above, together with the lack of any material evidence in support of the Respondent's assertions, the Panel is not persuaded on the facts that the Respondent has rights or legitimate interests in the disputed domain name in the terms of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Complainant is required to prove that the disputed domain name was registered and is being used in bad faith. Paragraph 4(b) of the Policy lists four circumstances that, without limitation, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.

A view of the website corresponding to the disputed domain name leaves little doubt that it follows the common model in which is has been registered, parked, and harnessed to a service that places links to advertisers. It may reasonably be concluded that the links featured are of the pay-per-click model, in which advertisers pay a commission to the owner or operator of the website that refers visitors to them. Technology exists for viewers of the Respondent's website to be shown advertisements believed to be suited to the visitor's demographic and browsing habits. The Panel need not know the business arrangement or possible division of proceeds between the Respondent, the webpage parking service, the entity that selects the advertisements, or others. The reasonable inference is that the website is operated for commercial gain.

The pay-per-click business model is capable of being operated legitimately, and frequently is, with advertisement links appearing on a wide variety of websites such as search engines and news outlets. It is not legitimate, however, if another's trademark is used without authority as the device for attracting visitors in the first place. In the present case, an Internet user searching for the trademark TGV, singly or in combination with other words, might be offered the disputed domain name, and may be confused at least initially into thinking it led to a website authorised by the Complainant. Within the terms of paragraph 4(b)(iv) of the Policy the Respondent is found to have intended to attract visitors for commercial gain by confusion with the Complainant's trademark as to endorsement of the website.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <tgvfamily.com> be transferred to the Complainant.